McDonalds Corporation vs Macjoy Fastfood Corporation on February 5, 2012 Intellectual Property Law Law on Trademarks, Service Marks and

d Trade Names Dominancy Test vs Holistic Test Since 1987, MacJoy Devices had been operating in Cebu. MacJoy is a fast food restaurant which se s fried chic!en, chic!en barbe"ue, burgers, fries, spaghetti, pa abo!, tacos, sandwiches, ha o#ha o and stea!s. $n 1991, MacJoy fi ed its app ication for trade%ar! before the $nte ectua &roperty 'ffice ($&'). McDona d*s opposed the app ication as it a eged that MacJoy c ose y rese%b es McDona d*s corporate ogo such that when used on identica or re ated goods, the trade%ar! app ied for wou d confuse or deceive purchasers into be ieving that the goods originate fro% the sa%e source or origin that the use and adoption in bad faith of the +MacJoy and Device, %ar! wou d fa se y tend to suggest a connection or affi iation with McDona d*s restaurant services and food products, thus, constituting a fraud upon the genera pub ic and further cause the di ution of the distinctiveness of McDona d*s registered and internationa y recogni-ed McDona d*S %ar!s to its pre.udice and irreparab e da%age. /he $&' ru ed in favor of McDona d*s. MacJoy appea ed before the Court of 0ppea s and the atter ru ed in favor of MacJoy. /he Court of 0ppea s, in ru ing over the case, actua y used the ho istic test (which is a test co%%on y used in infringe%ent cases). /he ho istic test oo!s upon the visua co%parisons between the two trade%ar!s. $n this case, the Court of 0ppea s ru ed that other than the etters +M, and +C, in the words MacJoy and McDona d*s, there are no rea si%i arities between the two trade%ar!s. +MacJoy, is written in round script whi e +McDona d*s, is written in thin gothic. +MacJoy, is acco%panied by a picture of a (cartoonish) chic!en whi e +McDona d*s, is acco%panied by the arches +M,. /he co or sche%es between the two are a so different. +MacJoy, is in deep pin! whi e +McDona d*s, is in go d co or. ISS !1 2hether or not MacJoy infringed upon the trade%ar! of McDona d*s. "!#D1 3es. /he Supre%e Court ru ed that the proper test to be used is the do%inancy test. $%e do&inancy test not only loo's at t%e visual co&parisons bet(een t(o trade&ar's but also t%e aural i&pressions created by t%e &ar's in t%e public &ind as (ell as connotative co&parisons, )ivin) little (ei)%t to factors li'e prices, *uality, sales outlets and &ar'et se)&ents+ $n the case at bar, the Supre%e Court ru ed that +McDona d*s, and +MacJoy, %ar!s are confusing y si%i ar with each other such that an ordinary purchaser can conc ude an association or re ation between the %ar!s. /o begin with, both %ar!s use the corporate +M, design ogo and the prefi4es +Mc, and5or +Mac, as do%inant features. /he first etter +M, in both %ar!s puts e%phasis on the prefi4es +Mc, and5or +Mac, by the si%i ar way in which they are depicted i.e. in an arch# i!e, capita i-ed and sty i-ed %anner. 6or sure, it is the prefi4 +Mc,, an abbreviation of +Mac,, which visua y and aura y catches the attention of the consu%ing pub ic. 7eri y, the word +M0CJ'3, attracts attention the sa%e way as did +McDona ds,, +Mac6ries,, +McSpaghetti,, +McDo,, +8ig Mac, and the rest of the MCD'90:D*S %ar!s which a use the prefi4es Mc and5or Mac. 8esides and %ost i%portant y, both trade%ar!s are used in the sa e of fastfood products. 6urther, the owner of MacJoy provided itt e e4p anation why in a the avai ab e na%es for a restaurant he chose the prefi4 +Mac, to be the do%inant feature of the trade%ar!. /he prefi4 +Mac, and +Mac.oy, has no re ation or si%i arity whatsoever to the na%e Scar ett 3u Carce , which is the na%e of the niece of MacJoy*s president who% he said was the basis of the trade%ar! MacJoy. 8y reason of the MacJoy*s i%p ausib e and insufficient e4p anation as to how and why out of the %any choices of words it cou d have used for its trade#na%e and5or trade%ar!, it chose the word +Mac.oy,, the on y ogica conc usion deducib e therefro% is that the MacJoy wou d want to ride high on the estab ished reputation and goodwi of the McDona d*s %ar!s, which, as app ied to its restaurant business and food products, is undoubted y beyond "uestion.

Societe Des &roduits 9est ;, S.0. vs. Court of 0ppea s 6acts1 'n January 18, 198<, private respondent C6C Corporation fi ed with the 8&/// an app ication forthe registration of the trade%ar! =6:07'> M0S/?>= for instant coffee. &etitioner Societe Des &roduits 9est e, S.0., a Swiss co%pany registered under Swiss aws anddo%ici ed in Swit-er and, fi ed an unverified 9otice of 'pposition, c ai%ing that the trade%ar! of private respondent,s product is =confusing y si%i ar to its trade%ar!s for coffee and coffee e4tracts,to wit1 M0S/?> >'0S/ and M0S/?> 8:?9D.= 0 verified 9otice of 'pposition was fi ed by 9est e &hi ippines, $nc., a &hi ippine corporation and a icensee of Societe Des &roduits 9est e S.0., against C6C@s app ication for registration of the trade%ar! 6:07'> M0S/?>. 9est e c ai%ed that the use, if any, by C6C of the trade%ar! 6:07'> M0S/?> and its registration wou d i!e y cause confusion in the tradeA or deceive purchasers and wou d fa se y suggest to the purchasing pub ic a connection in the business of 9est e, as the do%inant word present in the three (B) trade%ar!s is =M0S/?>=A or that the goods of C6C %ight be %ista!en as having originated fro% the atter. $n answer to the two oppositions, C6C argued that its trade%ar!, 6:07'> M0S/?>, is not confusing y si%i ar with the for%er,s trade%ar!s, M0S/?> >'0S/ and M0S/?> 8:?9D, a eging that, =e4cept for the word M0S/?> (which cannot be e4c usive y appropriated by any person for being a descriptive or generic na%e), the other words that are used respective y with said word in the three trade%ar!s are very different fro% each other C in %eaning, spe ing, pronunciation, and sound=. /he 8&/// denied C6C@s app ication for registration. /he Court of 0ppea s reversed the 8&///@s decision and ordered the Director of &atents to approve C6C,s app ication. Dence this petition before the SC. Issue, 2hether or not the C0 erred in reversing the decision of the 8&/// denying C6C@s petition for registration. >u ing1 3?S. Colorable i&itation denotes such a c ose or ingenious i%itation as to be ca cu ated to deceive ordinary persons, or such a rese%b ance to the origina as to deceive an ordinary purchaser giving such attention as a purchaser usua y gives, as to cause hi% to purchase the one supposing it to be the other. $n deter%ining if co orab e i%itation e4ists, .urisprudence has deve oped two !inds of tests # the Do%inancy /est and the Do istic /est. $%e test of do&inancy focuses on the si%i arity of the preva ent features of the co%peting trade%ar!s which %ight cause confusion or deception and thus constitute infringe%ent. 'n the other side of the spectru%, the ho istic test %andates that the entirety of the %ar!s in "uestion %ust be considered in deter%ining confusing si%i arity. /he Court of 0ppea s erred in app ying the tota ity ru e as defined in the cases of 8risto Myers v. Director of &atentsAMead Johnson E Co. v. 97J 7an Dorf :td .A and 0%erican Cyana%id Co. v. Director of &atents. /he tota ity ru e states that =the test is not si%p y to ta!e their words and co%pare the spe ing and pronunciation of said words. $n deter%ining whether two trade%ar!s are confusing y si%i ar, the two %ar!s in their entirety as they appear in the respective abe s %ust be considered in re ation to the goods to which they are attachedA the discerning eye of the observer %ust focus not on y on the predo%inant words but a so on the other features appearing on both abe s. $n the case at bar, other than the fact that both 9est e@s and C6C@s products are ine4pensive and co%%on househo d ite%s, the si%i arity ends there. 2hat is being "uestioned here is the use by C6C

of the trade%ar! M0S/?>. $n view of the difficu ty of app ying .urisprudentia precedents to trade%ar! cases due to the pecu iarity of each case, .udicia for a shou d not readi y app y a certain test or standard .ust because of see%ing si%i arities. 0s this Court has pointed above, there cou d be %ore te ing differences than si%i arities as to %a!e a .urisprudentia precedent inapp icab e. /he Court of 0ppea s he d that the test to be app ied shou d be the tota ity or ho istic test reasoning, since what is of para%ount consideration is the ordinary purchaser who is, in genera , undiscerning y rash in buying the %ore co%%on and ess e4pensive househo d products i!e coffee, and is therefore ess inc ined to c ose y e4a%ine specific detai s of si%i arities and dissi%i arities between co%peting products. /his Court cannot agree with the above reasoning. $f the ordinary purchaser is =undiscerning yrash= in buying such co%%on and ine4pensive househo d products as instant coffee, and wou d therefore be = ess inc ined to c ose y e4a%ine specific detai s of si%i arities and dissi%i arities= between the two co%peting products, then it wou d be ess i!e y for the ordinary purchaser to notice that C6C@s trade%ar! 6:07'> M0S/?> carries the co ors orange and %ocha whi e that of 9est e@s uses red and brown. /he app ication of the tota ity or ho istic test is i%proper since the ordinary purchaser wou d not be inc ined to notice the specific features, si%i arities or dissi%i arities, considering that the product is an ine4pensive and co%%on househo d ite%. Moreover, the tota ity or ho istic test is contrary to the e e%entary postu ate of the aw on trade%ar!s and unfair co%petition that confusing si%i arity is to be deter%ined on the basis of visua , aura , connotative co%parisons and overa i%pressions engendered by the %ar!s in controversy as they are encountered in the rea ities of the %ar!etp ace. /he tota ity or ho istic test on y re ies on visua co%parison between two trade%ar!s whereas the do%inancy test re ies not on y on the visua but a so on the aura and connotative co%parisons and overa i%pressions between the two trade%ar!s. $n addition, the word =M0S/?>= is neither a generic nor a descriptive ter%. 0s such, said ter% cannot be inva idated as a trade%ar! and, therefore, %ay be ega y protected. Feneric ter%s are those which constitute =the co%%on descriptive na%e of an artic e or substance,= or co%prise the =genus of which the particu ar product is a species,= or are =co%%on y used as the na%e or description of a !ind of goods,= or =i%p y reference to every %e%ber of a genus and the e4c usion of individuating characters,= or =refer to the basic nature of the wares or services provided rather than to the %ore idiosyncratic characteristics of a particu ar product,= and are not ega y protectab e. 'n the other hand, a ter% is descriptive and therefore inva id as a trade%ar! if, as understood in its nor%a and natura sense, it =forthwith conveys the characteristics, functions, "ua ities or ingredients of a product to one who has never seen it and does not !now what it is,= or =if it forthwith conveys an i%%ediate idea of the ingredients, "ua ities or characteristics of the goods,= or if it c ear y denotes what goods or services are provided in such a way that the consu%er does not have to e4ercise powers of perception or i%agination. >ather, the ter% =M0S/?>= is a suggestive ter% brought about by the advertising sche%e of 9est e. Suggestive ter%s are those which, in the phraseo ogy of one court, re"uire =i%agination, thought and perception to reach a conc usion as to the nature of the goods.= Such ter%s, =which subt y connote so%ething about the product,= are e igib e for protection in the absence of secondary %eaning. 2hi e suggestive %ar!s are capab e of shedding =so%e ight= upon certain characteristics of the goods or services in dispute, they neverthe ess invo ve =an e e%ent of incongruity,= =figurativeness,= or = i%aginative effort on the part of the observer.= /he ter% =M0S/?>=, therefore, has ac"uired a certain connotation to %ean the coffee products M0S/?> >'0S/ and M0S/?> 8:?9D produced by 9est e. 0s such, the use by C6C of the ter% =M0S/?>= in the trade%ar! for its coffee product 6:07'> M0S/?> is i!e y to cause confusion or %ista!e or even to deceive the ordinary purchasers. !tep%a -+.+ vs+ Director of /atents 1G SC>0 <9H (19GG) 60C/S1

'n 0pri IB, 19H9, private respondent 2est%ont &har%aceutica s, $nc. sought registration of trade%ar! +0tussin, /his was ob.ected to by petitioner ?tepha, 0.F. a eging that it wi be detri%enta on their part as it is confusing y si%i ar to its &ertussin. 8oth products dea with the treat%ent of cough. $SSJ?1 2hether or not 0ttusin %ay be registered as a trade%ar!. D?:D1 3es. 4 4 4 /he va idity of a cause for infring%ent is predicated upon co orab e i%itation. /he phrase +co orab e i%itaion, denotes such a +c ose or ingenious i%itation as to be ca cu ated to deceive ordinary persons, or such a rese%b ance to the origina as to deceive an ordinary purchaser giving such attention as a purchaser usua y gives, and to cause hi% to purchase the one supposing it to be the other., 2hi e +tussin, by itse f cannot thus be used e4c usive y to identify one*s goods, it %ay proper y beco%e the sub.ect of a trade%ar! +by co%bination with another word or phrase., /he two abe s are entire y different in co ors, contents, arrange%ent of words theeon, si-es, shapes and genera appearance. /he contrasts in pictoria effects and appea s to the eye is so pronounced that the abe of one cannot be %ista!en for that of the other, not even by persons unfa%i iar with the two trade%ar!s. 2e cannot escape notice of the fact that the two words do not sound a i!e K when pronounced.